1123
Rescission of a Nonpublication Request [R-08.2012]

(i) If an applicant
makes a request upon filing, certifying that the invention disclosed in
the application has not and will not be the subject of an application
filed in another country, or under a multilateral international
agreement, that requires publication of applications 18 months after
filing, the application shall not be published as provided in paragraph
(1).

(ii) An applicant may
rescind a request made under clause (i) at any time.

(iii) An applicant who has
made a request under clause (i) but who subsequently files, in a foreign
country or under a multilateral international agreement specified in
clause (i), an application directed to the invention disclosed in the
application filed in the Patent and Trademark Office, shall notify the
Director of such filing not later than 45 days after the date of the
filing of such foreign or international application. A failure of the
applicant to provide such notice within the prescribed period shall
result in the application being regarded as abandoned, unless it is shown
to the satisfaction of the Director that the delay in submitting the
notice was unintentional.

(iv) If an applicant
rescinds a request made under clause (i) or notifies the Director that an
application was filed in a foreign country or under a multilateral
international agreement specified in clause (i), the application shall be
published in accordance with the provisions of paragraph (1) on or as
soon as is practical after the date that is specified in clause
(i).

(v) If an applicant has
filed applications in one or more foreign countries, directly or through
a multilateral international agreement, and such foreign filed
applications corresponding to an application filed in the Patent and
Trademark Office or the description of the invention in such foreign
filed applications is less extensive than the application or description
of the invention in the application filed in the Patent and Trademark
Office, the applicant may submit a redacted copy of the application filed
in the Patent and Trademark Office eliminating any part or description of
the invention in such application that is not also contained in any of
the corresponding applications filed in a foreign country. The Director
may only publish the redacted copy of the application unless the redacted
copy of the application is not received within 16 months after the
earliest effective filing date for which a benefit is sought under this
title. The provisions of section
154(d) shall not apply to a claim if the
description of the invention published in the redacted application filed
under this clause with respect to the claim does not enable a person
skilled in the art to make and use the subject matter of the
claim.

*****

37 C.F.R. 1.213
Nonpublication request.

*****

(b) The applicant may rescind a
nonpublication request at any time. A request to rescind a nonpublication
request under paragraph (a) of this section must:

(1) Identify the
application to which it is directed;

(2) State in a
conspicuous manner that the request that the application is not to be
published under 35 U.S.C. 122(b) is
rescinded; and

An applicant may rescind a
previously-filed nonpublication request at any time. See 35 U.S.C.
122(b)(2)(B)(ii). Form PTO/SB/36 (revision April 2001 or later) may
be used to both rescind a nonpublication request and provide notice of foreign filing. The
form is reproduced in MPEP § 1135. If applicant makes a
nonpublication request under 35 U.S.C. 122(b)(2)(B)(i) and then
rescinds the nonpublication request before or on the date a foreign or international
application (hereinafter “foreign filing” or “counterpart application”) directed to the
invention disclosed in the U.S. application filed under 37 CFR 1.111(a)) in the USPTO is filed
in a foreign country, or under a multilateral international agreement, that requires
eighteen-month publication, the nonpublication request under 35 U.S.C.
122(b)(2)(B)(i) will be treated as annulled and the application will
be treated as if the nonpublication request was never made. Thus, if applicant filed a
nonpublication request and then decided to file a counterpart application, applicant must
file either: (1) a request to rescind the nonpublication request before filing the
counterpart application; or (2) a notice of foreign filing no later than 45 days after the
filing date of the counterpart application, to avoid abandonment of the application
(35 U.S.C.
122(b)(2)(B)(iii) and 37 CFR 1.213(c)).

The mere filing of a request under
37 CFR
1.213(b) to rescind the previously filed nonpublication request does
not comply with the notice of foreign filing requirement of 35 U.S.C.
122(b)(2)(B)(iii) and 37 CFR 1.213(c) (for applicants who
submitted a nonpublication request but before filing the request to rescind, also filed a
counterpart application in another country, or under a multilateral international
agreement, that requires eighteen-month publication of applications). Applicants are
strongly encouraged to provide a notice of foreign filing whenever rescinding a
nonpublication request in anticipation of filing a counterpart application in an
eighteen-month publication country. Form PTO/SB/36 (revision April 2001 or later) provides
both a rescission and notice of foreign filing. See MPEP § 1135. No benefit
can be given to a certificate of mailing or transmission under 37 CFR
1.8 on a request to rescind a nonpublication request in determining
whether there has been a rescission of a nonpublication request before or on the date a counterpart application is filed in an
eighteen-month publication country. A rescission of a nonpublication request is not a paper
required to be filed in the USPTO as provided for in 37 CFR 1.8(a). Thus, the provisions of
37 CFR 37 CFR 1.8 by their terms do not apply in this situation, and the
USPTO must use the actual date of receipt in the USPTO as defined in 37 CFR
1.6 as the date of the rescission to determine whether the
nonpublication request has been rescinded before or on the date of the filing of a
counterpart application such that the application may be considered an application in which
no nonpublication request under 35 U.S.C. 122(b)(2)(B)(i) was made.
Since a notice of foreign filing is required by the statute and 37 CFR 1.215(c),
the benefit of a certificate of mailing or transmission under 37 CFR
1.8 will be given to a notice of foreign filing.

After either a rescission of a
nonpublication request or a notice of foreign filing is received by the Office, the Office
will enter the rescission or notice of foreign filing into the Office Pre-Examination
System to schedule the application for publication. A notice (e.g., a “Notice Regarding
Rescission Of Nonpublication Request and Notice of Foreign Filing”) should be sent to
inform the applicant of the projected publication date. The application will be published
promptly after the expiration of a period of 18 months from the earliest filing date for
which a benefit is sought under title 35, United States Code, or as soon as practicable
after mailing this notice. See 35 U.S.C.
122(b)(2)(B)(iv).

An applicant should not rescind a
nonpublication request or provide a notice of foreign filing unless a nonpublication
request was actually made, because filing a rescission when one is not needed leads to a
waste of Office resources and may delay prosecution in the application. Furthermore, filing
a rescission of a nonpublication request where a nonpublication request was not originally
made may result in a reduction to any patent term adjustment under 35 U.S.C.
154(b).